cross border patent litigation - bardehle pagenberg
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Cross Border Patent LitigationA Hands-On Seminar for Young PractitionersDaan de Lange, Munich June 5, 2015
Morning Session (11 am-1 pm):
Patent Litigation in DE, FR, NL, UK – how does it work?
Duration and Costs of proceedings?Preliminary injunctions
Normally 2 – 3 months, quicker if necessary
Costs: EUR 50 – 150 k (depending on complexity)
No bifurcation
Single judge
Mini-trial
Duration and Costs of proceedings?Accelerated proceedings on the merits
Nearly all merits proceedings in accelerated regime
10 – 12 months from the service of writ to a reasoned decision
Appeal: a further 12 – 18 months
Costs again depend on complexity – typically: EUR 150 – 350 k, but can be > 500 k
No bifurcation
Panel of three judges
Cost reimbursement?
Losing party reimburses legal costs prevailing party
Typically 80 – 100% of actual costs. Maximum so far: > 800 k
Casino: even or double
Parties usually agree on amount
If not: discuss whether it’s fair and reasonable
Choice of forum?
No forum shopping
All patent cases before court in the Hague
Specialized patent chamber
Experienced patent judges
Appeals Hague court of appeal
No leave required for
Supreme Court appeal
Conduct of the proceedings, i.e. written and/or oral proceedings?
Accelerated merits proceedings: frontloaded
Substantive and complete writ of summons
Substantive and complete response + counterclaim
Response in counterclaim
Exchange additional exhibits
Oral hearing: a short day. Important
PI: focus more on the oral hearing
Bifurcation? Stay of proceedings?
No bifurcation (luckily!)
One single procedure
Same claim construction for infringement and validity
Court has discretionary power to stay pending opposition
Will only stay nullity action when infringement risk is limited
In PI proceedings: court will assess what merits court will do
Injunctions – enforceability, discretion of the court, proportionality considerations? If patent is valid and infringed: injunction
No discretionary powers of court, no EBay considerations
No bias against NEP’s
Enforceable notwithstanding appeal
No bond required
Liability for unjust enforcement if decision is reversed on appeal
Violation court order: severe penalty sums payable to opponent (!)
Means of securing evidence?
Based on the Enforcement Directive
Two-stage process
1. Order to preserve evidence (generally ex parte)• Low threshold
• Protective letters
• Bailiff enters premises with IT expert and collects relevant documents
2. Order to produce evidence in inter partes PI
Evidence from e.g. French sasie allowed
Also other way around
Role of (court & private) experts?
No court appointed experts
Parties file expert reports
Battle of experts
Experts are present at hearing
Court may ask questions
No formal cross-examination
Only for questions or fact
Advantages and disadvantages of warning letters?
Customary, not obligatory
Sometimes relevant for costs
Tactics: dependent on type of defendant
Warning letter gives standing for declaratory judgement for non-infringement
Could trigger torpedo
Warning letters to clients of infringer can be tricky
Preliminary injunction proceedings?
Potentially very powerful tool
Approximately 1/3 of the cases
Success rate even higher than merits proceedings
Often: pharma cases, market entry generics
Often: technically ‘easy’ cases, but not always!
No (real) urgency requirement
Effectively a mini-trial
Judge will look into merits of case (validity and infringement)
Preliminary injunction proceedings patents?
No (real) balance of convenience
Refuses injunction if he believes the patent will be held invalid
Ex parte injunction seldom
Only after inter partes decision
Example: group of companies continue to infringe
Followed by merits proceedings
Special tools?
Cross border injunction after Solvay / Honeywell
Art. 2 / 4 defendant
Non-Dutch defendants: Art 6(I) / 8(I)
GAT / LuK does not apply in PI
Special tools?
Protective brief against ex parte PI request, inspection order, seizure of goods
Accelerated merits proceedings: fixed dates, fixed time frame
Exhibits may be submitted in English or German
Court questions experts in English
Real time translation service during hearing
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